Trademarks

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On 2 November 2018, theDelhi High Court held online marketplaceDarvey.com liable for selling allegedly counterfeit Christian Louboutin products. The plaintiff claimed intellectual property rights, considering the platform used the name and image of Louboutin as meta-tags to attract traffic on their platform. Darvey.com claimed that they do not sell any product, but merely enablebooking of orders through their online platform. The ruling of the court observed that when an e-commerce platform is commissioned over unlawful acts, it is no longer a mere passive transmitter or online intermediary. In the same ruling, the court required Darveys.com to present the contact information of all sellers; request certificates from sellers that their products are not counterfeits; and to notify trademark owners before having products available on the platform. The case set a relevant precedent to make clear the extent of safe-harbour possibilities under theInformation Technology Act. Since the Baazee.com case-related to the sale of obscene videos, e-commerce businesses have denied liability for products uploaded by users.

The Council of Europe (CoE) adopted a new customs action plan 2018-2022 that should help customs authorities combat intellectual property rights (IPR) infringements. This plan should contribute to the better enforcement of IPR, especially in regard of trading with counterfeit goods, as well to strengthen co-operation between relevant authorities. In following period, the CoE should develop a road-map for the implementation of this plan and also to monitor its implementation.

On EU Blockathon held in Brussels that was aimed to address issues of piracy and counterfeit via blockchain based solutions, 28 companies and organization signed MOU on online advertising and intellectual property rights. This MOU is effort of EU commission in order to establish cooperation of right-holders with advertisers, advertising intermediaries and other actors in order to efficiently fight against violations of IPR. In that respect this cooperation should minimize placement of advertises in various websites and mobile apps that infringe IPR or disseminate such content/goods.

After many cases that Christian Louboutin fought over its red-soled high-heeled shoes, ECJ brought preliminary ruling on this matter in its favor. The initial case is referred by The District Court in The Hague which issued the preliminary injunction against Van Haren which was selling its own version of red-soled high-heeled shoes. The debate was around the question if the trademark that consists of a colour applied to the sole of a high-heeled shoe, consists only from a shape and as such can not have protection as a registered mark, or this is positional mark. In spite of oposite opnion of Advocate General, the court stated that this mark is not related to any specific shape of sole for high-heeled shoes since its essential element is a specific colour (red), as it was described in its previously filed trademark registrations. Hence the ECJ said that the red colour applied to the sole of a women’s high heel shoe is a positional mark.

Apple lost a lawsuit over trademark infringement against local Norwegian shop that was selling smartphone parts. Henrik Huseby, owner of small electronic repairs shops that repairs screens for iPhones has imported screens from China that had apple logo but blanked with marker. Norwegian custom authorities that sized one of these shipments notified Apple about this situation. Apple immediately sent notice and takedown letter to Henrik asking for the goods to be destroyed and sought a settlement in order to avoid the trial. Henrik refused to act upon this letter stating that screens were refurbished originals. Apple initiated lawsuit against Henrik stating that these parts were not manufactures by it and that even if they were refurbished originals they were imported against EEA resale legislation. Henrik argued that in this case Apple want to establish its monopoly over repair its own products, where it is known that it will not sell its parts to anyone else but authorized iPhone shops. Moreover, he argued that Apple logo was not relevant for his marketing (this is why its was banked wiht marker) and that he was not representing itself as authorized Apple shop. The court ruled in favour of Henrik, dismissing Apples claims over trademarks infringement, based on location and function of Apples logo on the sized goods. Also the court considered that there were no violation of Norwegian impots law since Apple logo was not visible nor used in marketing. Apple appealed on this decision.

Knowledge and ideas are key resources in the global economy. The protection of knowledge and ideas, through IPR, has become one of the predominant issues in the Internet governance debate, and has a strong development-oriented component. Internet-related IPR include copyright, trademarks, and patents.

Trademarks are relevant to the Internet because of the registration of domain names. In the early phase of Internet development, the registration of domain names was based on a first come, first served basis. This led to cybersquatting, the practice of registering names of companies and selling them later at a higher price.

Mechanisms for the protection of trademarks

This situation compelled the business sector to place the question of the protection of trademarks at the centre of the reform of Internet governance, leading to the establishment of ICANN in 1998. In the White Paper on the creation of ICANN, the US government demanded that ICANN develop and implement a mechanism for the protection of trademarks in the field of domain names. Soon after its formation, ICANN introduced the WIPO‑developed Universal Dispute Resolution Procedure (UDRP).

The recent introduction of the new gTLDs reinvigorated the relevance of trademark for domain names, ICANN, and overall IG.

The UDRP - the primary dispute resolution procedure - is stipulated in advance as a dispute resolution mechanism in all contracts involving the registration of gTLDs (e.g. .com, .edu, .org, .net), and for some ccTLDs. Its arbitration awards are applied directly through changes in the DNS without resorting to enforcement of trademark protection through national courts.

Resources

Publications

The latest edition of glossary, compiled by DiploFoundation, contains explanations of over 130 acronyms, initialisms, and abbreviations used in IG parlance. In addition to the complete term, most entries include a concise explanation and a link for further information.

The book, now in its sixth edition, provides a comprehensive overview of the main issues and actors in the field of Internet governance and digital policy through a practical framework for analysis, discussion, and resolution of significant issues. It has been translated into many languages.

Papers

This paper argues that design and enforcement of antitrust and intellectual property laws must be considered together by any coherent competition policy. These issues are examined in the paper, with the aim to define the efficient government intervention in the field of software.

GIP event reports

The session that was co-chaired by Mr J Scott Evans (Associate General Counsel, Adobe Systems Incorporated), Mr Phil Corwin (Founding Principal, VirtuaLaw LLC) and Ms Kathy Kleiman (Founder, ENIAC Programmers Project), sought to deliberate on charter questions pertaining to the Review of Rights Protection Mechanisms (RPMs) in all generic top-level domains (gTLDs) Policy Development Process (PDP) Working Group, in addition to soliciting input from the broader community on these ongoing discussions.

Evans took the participants through the agenda, pointing out that the session was a three-hour session, and would be broken into three different parts. He explained that the first part of the meeting would consider the sub-team’s work with regards to narrowing down and clarifying the charter questions, and identifying the data collection needed for the Sunrise period and a Trademark Claims service, supported by use of a Trademark Clearinghouse (TMCH). Evans added that the second hour would be spent discussing the work that has been done by another sub-team with regards to the trademark claims notice. The third hour would contain discussions centring around registries, registrars, and how the RPMs are used in the system.

Evans kick-started the discussions by stating that as co-chairs, they took part in reviewing the last round of new generic top-level domains, and like the New gTLD Subsequent Procedures Working Group, they were looking at the rights protections in this second round. He mentioned that the overarching aim of the charter was to look at the rights protection mechanisms, to determine if they were functioning as they were designed to, and whether there was any need for changes or revisions to be made. Further, he stated that they had divided their work into two phases and were currently in phase one, a phase that aimed to tackle all the rights protection mechanisms ranging from the Post-Delegation Dispute Resolution Procedures (PDDRP), the trademark claims notices, the Sunrise period, the TMCH, and last but not least the Uniform Rapid Suspension System (URS).

Corwin intervened to say that the first RPM that the PDP Working Group looked at was the Trademark Dispute Resolution Procedure, which was the only RPM that was applied at the top level. He added that the PDP Working Group was in two phases, and that phase one needed to be completed before the next round of gTLDs. The second phase, he said, was to be focused on the UDRP which is a consensus policy.

Ms Lori Schulman (Senior Director, Internet Policy, International Trademark Association (INTA)) explained that the PDP Working Group took 22 questions that they were asked to consider, including general questions about the RPMs. She said that the Working Group then narrowed down the questions to Sunrise-specific issues where things would be relevant.

Prof. Amadeu Abril i Abril (ESADE Law School, Ramon Llull University in Barcelona) felt that the idea of the Trademark Clearinghouse was destructive for the vast majority of trademark owners and would-be registrants that approach it as registry operators. He pointed out that the failure in the design of the system did not lie with the TMCH, but with ICANN, which failed to implement labels for words that have IDNs.

In his intervention, Mr Rubens Kuhl (Product Marketing Manager, NIC.br) suggested that the PDP Working Group directs trademark owners to exercise care in their trademarks, and that they should not try to register trademarks that do not have a meaning in a specific context.

In response to Kuhl's appeal, Mr Greg Shatan (Partner, Bortstein Legal Group) remarked that unless it was in the rules of the registry, each registrant in Sunrise or otherwise should have the ability to make their own choice about why they are registering in a particular TLD.

The second phase of discussions took off with Schulman exploring the issue of whether the availability of Sunrise registrations for identical matches should be reviewed, whether the matching process should be expanded, and how registrants’ freedom of expression and fair use rights could be protected and balanced against trademark rights. She further ventured into the question of Sunrise and premium name pricing, vis-à-vis its limit on trademark owners’ ability to participate in the Sunrise period.

Schulman explained that the second level domain names that are offered for registration in the determination of the registry were more desirable for the purchaser, and commanded a price that was higher than a non-premium name.

Mr James Bladel (Vice President of Policy, GoDaddy) sought for clarity of the terms 'standard pricing' and 'non-premium' as referred to by Schulman. Bladel’s concern was echoed by Kleiman, who also needed clarity on the definition of 'standard pricing'. Schulman responded by stating that the term was not clear in itself, thus there was a need to have some baseline understanding of it.

Discussions in the last track of the session focused on registries and cyber-squatting.

Mr George Kirikos (President, Leap of Faith Financial Services Inc. and Leap of Faith Research Inc.) gave instances when. xyz had their price promotion for penny domains. He felt this might have caused one to have data skewed, if one was to take the absolute number of UDRP and URS cases, or cyber-squatting instances.

Shatan pointed out that UDRP/URS data was not the only indicator of a potential case of cyber-squatting. He reiterated that there were a number of different ways to deal with domains that are abusive or infringing.

Mr Brian Beckham (Head, Internet Dispute Resolution Section, World Intellectual Property Organization (WIPO)) emphasised that the UDRP was one of those consensus policies, and that paragraph two of the UDRP required that any registrant who registers a domain name in a gTLD agrees not to infringe third-party rights.

Mr Paul Tattersfield (remote participant) asked whether the PDP Working Group would consider extending 'proof of use' requirements for Sunrise names to all trademarks for the issuance of TMCH notices. His suggestion was guided by the fact that some jurisdictions allowed trademarks for which there are no underlying goods and services to protect.

Kuhl decried the claims implementation, terming it as flawed. Kuhl suggested that the PDP Working Group revises it. He revealed that there were registrars and resellers that would never support a claims period, and only went to serve a TLD after the claims period had elapsed. He added that this meant that such resellers could only process TLDs that are not in the claims period.

Corwin thanked Kuhl for his remarks and agreed that the claims notice that had been designed did not fit in with the way a lot of registrars operated. He said that the Working Group would be looking at the actual process that registrars and resellers use in the quest to iron out the complexity.

The session was dedicated to the discussion of how to protect the acronyms of International Governmental Organisations (IGOs). The discussion encompassed the following topics: a) which names or acronyms should be reserved; b) how to notify IGOs of the registration of a related name; c) the dispute resolution mechanism that could be used to resolve potentially competing legal processes; d) the appeal mechanism if the parties disagree with the results of that dispute resolution.

Mr Bruce Tonkin, ICANN Board, kickstarted the discussion by revising the narrow scope of ICANN’s mandate: to ensure the security and stability of the domain name system. He also listed some of the principles that guide the organisation, such as: the need to carry out its activities in conformity with the relevant principles of international law, international conventions and applicable local laws, while recognising that governments and public authorities are responsible for public policy and taking into account public policy advice. This should be done in a way that respects the multistakeholder decision-making process, ensuring that as many parties as possible are involved in assessing the global public interest.

With regard to applicable laws, the Generic Name Supporting Organization (GNSO) policy development process (PDP) is taking into account the Paris Convention for the protection of industrial property, which has some specific provisions that relate to the names and abbreviations of intergovernmental organisations, preventing third parties from getting a trademark against these names. The Article 6ter is only applicable to trademarks and its purpose is to prohibit the registration and use of trademarks that are identical to or present certain similarity with the name or official signs of an IGO.

The current status of discussions is the following, when it comes to the reservation of names and acronyms:

Names: the ICANN Board has approved permanently withholding from registration at the second level.

Acronyms: the Board has approved interim protections for the acronyms in gTLDs. At this stage, the current prevailing view seems to be that acronyms have multiple uses, they are not owned by any one party and therefore it is not appropriate to reserve them in advance.

It is important to note, however, that both of these provisions do not protect names in gTLDs registered or top level names created prior to 2012. This means that there is no current protection for com, net, org, biz, info, name, moby, for example. One of the reasons that justify a policy development process is to make sure that the approach is applied to all gTLDs.

An additional complexity is that acronyms are not unique. For example, AU is the acronym for the African Union and that is also the country code for Australia. Many companies use AU as a designation to indicate their Australian operations.

The next topic of discussion was a mechanism that would let IGOs know when an undue registration happens. In this regard, suggestions were received from both the GNSO and the Governmental Advisory Committee (GAC). Both agree with the idea of a notification period, based on the experience of trademark protection, but the issue is how this notification should be done, to whom and for how long. The model of a 90-day 'Sunrise period’, proposed by the GNSO, was not accepted by the GAC because the opportunity for abusing a name may come at any time. For the GAC, a permanent notification mechanism should be preferable.

An adaptation of the 90-day period gained traction during the session and it was also suggested that ICANN could be a service provider for giving notification that an IGO name has gone into the DNS. This 90-day approach would allow use of the model of existing mechanisms and avoid re-opening a PDP. When it comes to potential dispute resolution mechanisms applying to IGO-related names, it was felt by some participants that it would be more pragmatic to give IGOs easier access to the existing improved system, unless there is a legal opinion that IGOs would need a separate system because of their immunity.

When it comes to appeals, the prevailing opinion seemed to be that ICANN’s curative rights processes are supplements to existing laws and that ICANN has no authority to compel registrants to submit to arbitration with no legal appeal. What would happen with regards to IGO’s immunity from national judicial process is an issue that deserves further discussion.

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